Tuesday, November 27, 2007

TTAB Finds "QUESTIONARY" and "PICTIONARY" Confusingly Similar for Board Games

In a less than convincing decision, the Board sustained a Section 2(d) opposition to registration of the mark QUESTIONARY THE GAME OF SMART QUESTIONS in the form shown immediately below, for "board games" [GAME disclaimed], finding the mark likely to cause confusion with the registered mark PICTIONARY for "equipment sold as a unit for playing a board game." Pictionary Inc. v. Spark Games LLC, Opposition No. 91167236 (November 16, 2007) [not precedential]. [Reconsideration denied (here)].

The Board began by rejecting as inadequately supported Opposer's claim that the mark PICTIONARY has become famous. The panel did, however, find that PICTIONARY is a strong mark in the field of board games, "which accords it a commensurate higher level of protection."

As to the goods, the Board found them to be legally identical, and presumed (as it must) that they travel in the same channels of trade to the same classes of customers.

As to the marks, the Board first noted that when goods are identical, "the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines."

Applicant argued that QUESTIONARY is a real word, whereas PICTIONARY is "a made up word." It urged that the only point of similarity between the marks is the "generic" and weak suffix "TIONARY."

The Board, however, found that the points of similarity outweighed the dissimilarities. Concluding that QUESTIONARY is the dominant element in Applicant's mark, the Board found that "the identical sound and appearance of the suffix presents a similarity sufficient to create a likelihood of confusion."

"both marks evoke the word 'dictionary' and, consequently, the use of words in these games of inquiry. Taking into consideration the strength of opposer's mark, we conclude that the parties marks are substantially similar."

The existence of three third-party registrations (CONSTRUCTIONARY, DICKTIONARY, and EMOTIONARY) for board games was noted by the Board, but was insufficient to convince the Board that consumers would disregard the suffix and rely on the prefix to distinguish the marks.

To the extent that the Board had any doubt about the likelihood of confusion, it resolved that doubt, as required, in favor of the prior registrant.

TTABlog comment: Opposer did not register the phantom mark "*TIONARY," where the asterisk may be replaced by any prefix. It registered (and used) the mark PICTIONARY. In my mind, QUESTIONARY and PICTIONARY are clearly distinguishable. The fact that both evoke the word dictionary is a big "so what?" as far as I'm concerned. CONSTRUCTIONARY, DICKTIONARY, and EMOTIONARY were all registered over the PICTIONARY registration. Why should QUESTIONARY not get the same favorable treatment?

Text Copyright John L. Welch 2007.


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